Assos v Asos Plc: ASOS’s trademark survives challenge from cycling brand Assos
AssosvAsos Plc
- Court
- High Court
- Judgment
- 4 February 2014
- Citation
- [2014] EWHC 123 (Ch)
A niche premium brand doesn't automatically block a similar name used in a different market.
Cycling clothing brand Assos tried to invalidate fashion retailer ASOS's UK trademark registration. The High Court mostly sided with ASOS, finding no real likelihood of confusion between the two.
What happened
This was a follow-up issue after the main trial between Assos, a premium cycling clothing brand, and ASOS, the online fashion retailer. Assos argued that ASOS's UK trademark registration, which covered clothing, skincare and retail services, was partially invalid because it conflicted with Assos's earlier Community Trademark (CTM) rights. The court had to apply a different legal test for this validity challenge than it had used for the earlier infringement claim. Instead of looking only at how ASOS actually used its mark, the court had to consider every fair notional use ASOS could make of the registration, including uses it wasn't currently making.
What did the court decide in Assos v Asos Plc?
The court held that ASOS's UK trademark registration was largely valid. Even imagining hypothetical fair uses of the mark, such as prominent branding on t-shirts or a physical shop, there was no real likelihood of confusion with Assos's cycling brand. The court found Assos's reputation was tied specifically to professional cycling wear, not fashion generally. It rejected the challenges under sections 5(2)(b), 5(3) and 5(4) of the Trade Marks Act 1994, covering confusion, unfair advantage or detriment to reputation, and passing off. The court did narrow the ASOS specification slightly, excluding specialist cycling clothing and remedies for cycling-related ailments, applying a principle from the POSTKANTOOR case that a mark wasn't meant to cover goods where its own wording would be misleading.
What we learned from this
- What I'd take from this is that owning a well-known name in one specialist market doesn't give you an automatic right to stop a similar name in a completely different market, even a fashion brand that sounds almost identical.
- A validity challenge to a trademark registration uses a wider test than an infringement claim: the court has to imagine all the fair ways the mark owner could use it, not just how it's actually being used today.
- Even where a challenge mostly fails, a court can still narrow a registration's specification to remove goods where the wording itself would mislead customers.
- A premium or niche brand reputation in one specific market usually doesn't stretch to block overlap with a different, broader market segment.
Things to be aware of
- The court left open the possibility that if ASOS later used its mark in ways that strayed into cycling-related marketing, such as slogans linking its clothing to cycling, this could still support a future passing off claim despite the registration surviving.
- The test applied here, considering every fair notional use of a registered mark, is broader than the test used in a straightforward infringement dispute, so the outcome of one type of claim doesn't guarantee the same result in another.
The businesses involved
The claimant (trading as Assos)
Individual claimant connected with Assos, the premium cycling clothing brand whose Community Trademark (CTM) rights formed the basis of the invalidity challenge against ASOS's UK trademark registration.
Asos Plc
Registered in England in June 2000, based in London and still active. An online fast-fashion and cosmetics retailer aimed primarily at young adults, holding 111 trademarks on the UK trademark register.
- Companies House
- 04006623 Active
- Incorporated
- June 2000
- Registered office
- London
- Business activity
- Activities of head offices
- UK trademarks
- 111
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This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2014] EWHC 123 (Ch) on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 27 October 2026. Report an error.
